Intentional Media, LLCv.Kim Carpenter Consulting, LLC

Trademark Trial and Appeal Board

May 21, 2021

91245787 (T.T.A.B. May. 21, 2021)

Mailed: May 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Intentional Media, LLC
v.
Kim Carpenter Consulting, LLC
_____

Opposition No. 91245787
_____

Kendall Thiessen of Transideation, PC, for Intentional Media, LLC.

Angela V. Langlotz of The Law Office of Angela V. Langlotz, P.C.,
for Kim Carpenter Consulting, LLC.
_____

Before Taylor, Bergsman and Lynch, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Kim Carpenter Consulting, LLC (Applicant) seeks registration on the Principal
Register of the mark WORLD CHANGING WOMEN, in standard character form, for
“Educational services, namely, conducting classes, seminars, conferences, workshops,
retreats, camps and field trips in the field of business development, marketing,
finance, operations, sales, public relations, presentation skills, and communication
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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skills and distribution of training material in connection therewith,” in International
Class 41.1
Intentional Media, LLC (Opposer) opposes the registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer alleges that it
has used the mark WORLD-CHANGING WOMEN since November 1, 2017, “in
connection with the provision [of] Educational services, namely, conducting classes,
seminars, conferences, workshops, retreats, podcasts, and distribution of training
materials in connection therewith” and that Applicant’s mark for the applied-for
services so resembles Opposer’s mark as to be likely to cause confusion.2
Applicant, in its Amended Answer, denies the salient allegations in the Amended
Notice of Opposition.3
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application.

1 Serial No. 87923596 filed May 16, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), based on Applicant’s claim of first of its mark anywhere and in commerce as of
April 4, 2018.
2 Amended Notice of Opposition ¶¶2 and 4 (8 TTABVUE 2-3).
3 Applicant, at the end of its Amended Answer, included a motion for summary judgment on
the issue of priority. 9 TTABVUE 3-4. The Board did not acknowledge the motion and
suspend these proceeding pending the disposition of the motion for summary judgment
because Applicant added the motion to the end of Applicant’s Amended Answer rather than
filing it in a separate document. Melwani v. Allegiance Corp, 97 USPQ2d 1537, 1541 (TTAB
2010) (“To be clear, a party should not embed a motion in another filing, with the possible
exception of a cross-motion that may be included in a response to an existing motion. That is,
all new motions should be separately filed and briefed, to ensure they receive the proper
attention.”). Opposer did not file a brief in opposition to the motion for summary judgment.
Applicant never called attention to the motion for summary judgment. The parties introduced
testimony and evidence and filed their briefs. Under these circumstances, we find that the
motion for summary judgment is moot.
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A. Opposer’s Testimony and Evidence.4
1. Testimony declaration of Meghan French, co-founder and Chief
Executive Officer of Little Green Sprout Media LLC, dba Conscious
Company Media, Opposer’s predecessor-in-interest;5

2. Notice of reliance on a screenshot of Applicant’s website
(kimcarpenter.net) derived from the Way Back Machine website
(web.archive.org/
web/20170709164815/https://www.kimcarpenter.net/) purportedly
for July 9, 2017;6

3. Notice of reliance on a screenshot of Applicant’s website derived from
the Way Back Machine website (web.archive.org/
web/20180701044236/https://www.kimcarpenter.net/)
purportedly for July 1, 2018;7 and

4. Notice of reliance on a screenshot of Applicant’s website
(worldchangingwomen.com) derived from the Way Back Machine
(website web.archive.org/
web/20180817025640/https://www.worldchangingwomen.com/)
purportedly for August 17, 2018.8

4 Opposer proffered into evidence through notice of reliance “[w]ebsite screenshots and
related content provided under the mark World-Changing Women as published by Plaintiff
at the following URLs” and listing links to three websites without introducing copies of the
websites. 16 TTABVUE 3. Opposer also proffered a video from the February 20-22, 2018
“World-changing Women’s Summit” posted at . French Decl.
¶15 (6 TTABVUE 6-7). Providing only a web address or a hyperlink without the material
attached is not sufficient to introduce it into the record because the information displayed at
a link’s Internet address is impermanent. See TV Azteca, S.A.B. de C.V. v. Martin,
128 USPQ2d 1786, 1790 n.14 (: “The Board does not accept Internet links as a substitute for
submission of a copy of the resulting page.”); Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,
1550 (TTAB 2012) (search summary inadmissible because it merely offers links to
information not otherwise of record); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 704.08 (2020). Because Opposer did not introduce copies of the
websites, we cannot give them any consideration.
5 16 TTABVUE 4-59.
6 16 TTABVUE 60-62.
7 16 TTABVUE 63-66.
8 16 TTABVUE 67-77.
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B. Applicant’s Testimony and Evidence.
1. Testimony declaration of Kim Carpenter, Applicant’s owner;9

2. Testimony declaration of Tara Butler Floch,, dba Broadview
Coaching;10

3. Testimony declaration of Linda Claire Puig, a person who
purportedly interviewed Kim Carpenter at a symposium where Kim
Carpenter discussed Applicant’s World Changing Women
initiative;11

4. Testimony declaration of Nadine Nicholson, dba Ascend Leadership,
who purportedly attended a “World Changing Women Journey to
Bali”;12

5. Notice of reliance on screenshots from Applicant’s current website;13

6. Notice of reliance on screenshots of Applicant’s website derived from
the Way Back Machine;14

7. Notice of reliance on screenshots of Applicant’s Facebook page;15

8. Notice of reliance on screenshots of Applicant’s Instagram account;16
and

9. Notice of reliance on Applicant’s Registration No. 5701394 for the
mark WORLD CHANGING WOMEN and design for “Educational
services, namely, conducting classes, seminars, conferences,
workshops, retreats, camps and field trips in the field of business
development, marketing, finance, operations, sales, public relations,
presentation skills, and communication skills and distribution of

9 17 TTABVUE 5-41.
10 17 TTABVUE 42-46.
11 17 TTABVUE 47-65.
12 17 TTABVUE 67.
13 17 TTABVUE 68-70.
14 17 TTABVUE 71-74.
15 17 TTABVUE 75-78.
16 17 TTABVUE 79.
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training material in connection therewith,” in International Class 41
(the same services as in the application at issue).17

II. Prior Registration Defense
Applicant filed the application at issue on May 16, 2018. Subsequently, on May
21, 2018, Applicant filed application Serial No. 87929824 for the mark WORLD
CHANGING WOMEN and design, reproduced below, for “Educational services,
namely, conducting classes, seminars, conferences, workshops, retreats, camps and
field trips in the field of business development, marketing, finance, operations, sales,
public relations, presentation skills, and communication skills and distribution of
training material in connection therewith,” in International Class 41.18

The description of the mark reads as follows:
Color is not claimed as a feature of the mark. The mark
consists of the wording “World Changing Women.” A sun
made of different sized vertical lines on the left with the
wording “World Changing” to the right and wording
“Women” below “World.”
The USPTO published for opposition the application for the mark WORLD
CHANGING WOMEN and design on December 4, 2018, a date prior to the filing of
the Notice of Opposition. No one filed a Notice of Opposition, and the USPTO
registered the application for the mark WORLD CHANGING WOMEN and design

17 17 TTABVUE 80.
18 Carpenter Decl. ¶6 and Exhibit C (17 TTABVUE 6 and 12); 17 TTABVUE 80.
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on March 19, 2019,19 a date subsequent to the filing of this Notice of Opposition
(January 11, 2019).
On September 23, 2019, Opposer filed its Amended Notice of Opposition to the
application at issue.20 Opposer did not refer to the WORLD CHANGING WOMEN
and design registration. There is nothing in the record indicating Opposer filed a
petition to cancel Applicant’s Registration No. 5701394 for the mark WORLD
CHANGING WOMEN and design.
Applicant filed its Answer to the Amended Notice of Opposition on October 23,
2019, seven months after its WORLD CHANGING WOMEN and design mark
registered.21 Applicant denied the salient allegations in the Amended Notice of
Opposition. Applicant did not plead the prior registration affirmative defense based
on its ownership of Registration No. 5701394 for the mark WORLD CHANGING
WOMEN and design.22
During Opposer’s testimony period, Meghan French, the Chief Executive Officer
of Opposer’s predecessor-in-interest testified that “on May 16, 2018, Defendant filed
a trademark on the mark ‘World Changing Women’ (serial number 87923596) which
is the subject of this current opposition proceeding.”23 Ms. French did not refer to

19 Registration No. 5701394.
20 8 TTABVUE.
21 9 TTABVUE.
22 As noted above, at the end of its Amended Answer, Applicant included a motion for
summary judgment on the issue of priority. 9 TTABVUE 3-4. Applicant did not refer to the
registration for the mark WORLD CHANGING WOMEN and design in the motion for
summary judgment.
23 French Decl. ¶17 (16 TTABVUE 7).
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Applicant’s Registration No. 5701394 for the mark WORLD CHANGING WOMEN
and design.
During Applicant’s trial period, Applicant introduced into evidence a copy of
Registration No. 5701394 for the mark WORLD CHANGING WOMEN and design.
6. Kim Carpenter Consulting LLC owns trademark
Trademark [sic] registration 5701394 issued March 12,
2019 for the mark WORLD CHANGING WOMEN and
design, which is attached as Exhibit C.24
Applicant also introduced a copy of the registration through a notice of reliance.
e. Defendant/Applicant’s Trademark registration 5701394
issued March 19, 2019 for the mark WORLD CHANGING
WOMEN and design, attached as Exhibit 9.25
Opposer did not refer to Applicant’s Registration No. 5701394 for the mark
WORLD CHANGING WOMEN and design in either its brief or reply brief. Applicant,
on the other hand, argued the prior registration affirmative defense in its brief.
This Opposition proceeding is moot in light of the
registration of Defendant’s WORLD CHANGING WOMEN
and design trademark, Registration number 5701394.
Plaintiff sought to invalidate Defendant’s trademark
application serial number 87923596 through this
Opposition proceeding, but did not oppose Defendant’s
pending trademark application serial number 87929824,
which registration issued during the pendency of this
Opposition proceeding. Even if the TTAB were to decide in
favor of Plaintiff in this Opposition, Plaintiff would still be
unable to register its pending trademark application serial
number 88116608 for WORLD CHANGING WOMEN
because of Defendant’s prior registration which issued
unopposed in March of 2019.26

24 Carpenter Decl. ¶ 6 (17 TTABVUE 6).
25 17 TTABVUE 3. See also 17 TTABVUE 80 (a copy of the registration).
26 Applicant’s Brief, p. 9-10 (18 TTABVUE 10-11).
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As noted above, Applicant did not plead as an affirmative defense that it would
rely on Registration No. 5701394 as the basis for the prior registration (or Morehouse)
defense27 (i.e., the defense that a petitioner cannot suffer damage, within the meaning
of Section 14 of the Trademark Act, by the maintenance of a registration if the
registrant owns unchallenged registrations of that mark for the same goods).
Applicant’s mere denial of Opposer’s allegation of priority of use is sufficient to put
Opposer on notice that Opposer must prove its pleaded priority. However, Applicant’s
denial of Opposer’s allegation of priority of use is not sufficient to put Opposer on
notice that Applicant is relying on the prior registration defense. In other words,
Applicant must expressly plead the prior registration affirmative defense. See
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana, Inc., 98 USPQ2d
1921, 1926 (TTAB 2011); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720
(TTAB 2008).
An affirmative defense is defined as follows:
A defendant’s assertion raising new facts and
arguments that, if true, will defeat the plaintiff’s or
prosecution’s claim, even if all allegations in the
complaint are true.
“[A]n unpleaded defense cannot be relied upon by the
defendant unless the defendant’s pleading is amended (or
deemed amended), pursuant to Fed. R. Civ. P. 15(a) or
15(b), to assert the matter.” TBMP §§ 311.01 and 314 (2nd
ed. rev. 2004). The reason for requiring an affirmative
defense to be pleaded is to give the plaintiff notice of the
defense and an opportunity to respond.
H.D. Lee Co., 87 USPQ2d at 1720.

27 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969).
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Because Applicant may not rely on an unpleaded affirmative defense, we must
determine whether the parties tried Applicant ’s prior registration defense by implied
consent.
Implied consent to the trial of an unpleaded issue can be
found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered
in support of the issue. Fairness dictates whether an issue
has been tried by consent – there must be an absence of
doubt that the nonmoving party is aware that the issue is
being tried.
TBMP § 507.03(b). See also Productos Lacteos Tocumbo, 98 USPQ2d at 1924-27
(unpleaded tacking and prior registration defense were not tried by implied consent
where petitioner was not fully appraised of respondent’s reliance on use and
registration of another mark), aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016); Safer Inc. v.
OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB 2010) (applicant was not
aware opposer intended to rely on registration to prove likelihood of confusion until
opposer filed rebuttal notice of reliance); Levi Strauss & Co. v. R. Josephs Sportswear,
Inc., 28 USPQ2d 1464, 1471 n.11 (TTAB 1993), recon. denied, 36 USPQ2d 1328
(TTAB 1994) (party was not fairly apprised that evidence used for a pleaded claim of
descriptiveness was also being offered in support of unpleaded Trademark Act § 2(d)
claim); Boise Cascade Corp. v. Cascade Coach Co., 168 USPQ 795, 797 (TTAB 1970)
(“Generally speaking, there is an implied consent to contest an issue if there is no
objection to the introduction of evidence on the unpleaded issue, as long as the
adverse party was fairly informed that the evidence went to the unpleaded issue .”).
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Although Opposer did not raise an objection to the introduction of Applicant’s
Registration No. 5701394, it is clear from the circumstances described above, Opposer
was not aware of or fairly apprised that Applicant intended to raise the prior
registration affirmative defense. Neither Kim Carpenter’s testimony declaration, nor
Applicant’s notice of reliance, provided any notice regarding Applicant’s purpose in
introducing its registration. In this regard, we note that Trademark Rule 2.122(g), 37
C.F.R. § 2.122(g), provides, in relevant part, “[f]or all evidence offered by notice of
reliance, the notice must indicate generally the relevance of the evidence and
associate it with one or more issues in the proceeding.”
We find that the parties did not try Applicant’s unpleaded prior registration
affirmative defense by implied consent. Therefore, we will not consider the defense.
III. Entitlement to a statutory cause of action
Opposer’s entitlement to a statutory cause of action, formerly referred to as
“standing” by the Federal Circuit and the Board,28 is an essential element in every
inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277 (Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC,
965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish
entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest
falling within the zone of interests protected by the statute and (ii) a reasonable belief

28 Our decisions have previously analyzed the requirements of Sections 1063 and 1064 under
the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of
action. Despite the change in nomenclature, our prior decisions and those of the Federal
Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable.
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that the registration of Applicant’s mark is the proximate cause of damage to
Opposer. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana,
111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (TTAB 1982).
On February 20-22, 2018, Opposer hosted its first WORLD-CHANGING WOMEN
conference to foster “a network of female business leaders and entrepreneurs.” 29
There is no question that Opposer has an interest falling within the zone of interest
protected by the Trademark Act inasmuch as the parties are using virtually identical
marks for very similar services. Because Opposer’s likelihood of confusion claim is
not frivolous, Opposer has a reasonable belief that the registration of Applicant’s
mark will damage Opposer. See Lipton Indus., Inc. v. Ralston Purina Co., 607 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982) (plaintiff may establish standing by proving
a real commercial interest in its own marks and a reasonable belief that it would be
damaged (e.g., a claim of likelihood of confusion that is not wholly without merit));
Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner
has established his common-law rights in the mark DESIGNED2SELL, and has
thereby established his standing to bring this proceeding.”); Syngenta Crop Prot. Inc.
v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses
its mark “is sufficient to support opposer’s allegations of a reasonable belief that it
would be damaged …” where opposer alleged likelihood of confusion); CPC Int’l, Inc.

29 French Testimony Decl. ¶¶8 and 15 (16 TTABVUE 5-6).
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v. Seven-Up Co., 218 USPQ 379, 380 (TTAB 1983) (“opposer established its standing
to raise the issue [of nonuse] by proving that its assertion of likelihood of confusion
was not wholly without merit.”).
Opposer has established its entitlement to a statutory cause of action.
IV. Priority
Opposer alleges that it has used the mark WORLD-CHANGING WOMEN “in
connection with the provision [of] Educational services, namely, conducting classes,
seminars, conferences, workshops, retreats, podcasts, and distribution of training
materials in connection therewith.”30
The description of services in the application at issue is “Educational services,
namely, conducting classes, seminars, conferences, workshops, retreats, camps and
field trips in the field of business development, marketing, finance, operations, sales,
public relations, presentation skills, and communication skills and distr ibution of
training material in connection therewith.”
Section 45 of the Trademark Act, 15 U.S.C. § 1127, reads, in pertinent part, as
follows:
Use in commerce. The term “use in commerce” means the
bona fide use of a mark in the ordinary course of trade, and
not made merely to reserve a right in a mark. For purposes
of this chapter, a mark shall be deemed to be in use in
commerce—
(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the

30 Amended Notice of Opposition ¶¶2 and 4 (8 TTABVUE 2-3).
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person rendering the services is engaged in commerce in
connection with the services.
See also Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1307-08
(Fed. Cir. 2009) (“it is well settled that advertising of a service, without performance
of a service, will not support registration. … The use in advertising which creates a
right in a service mark must be advertising which relates to an existing service which
has already been offered to the public.”) (quoting Greyhound Corp. v. Armour Life Ins.
Co., 214 USPQ 473, 474 (TTAB 1982). Thus, to determine which party made prior
use of their mark, we must find which party actually performed their “educational
services” first.
In this regard, Opposer must establish proprietary rights in its pleaded common-
law mark that precede Applicant's actual or constructive use of its involved mark. See
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA
1981); Exec. Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1180
(TTAB 2017); Laramie Corp. v. Talk to Me Programs Inc., 36 USPQ2d 1840, 1845
(TTAB 1995). In other words, because unregistered marks are not entitled to the
presumptions established under Section 7(b)-(c) of the Trademark Act, 15 U.S.C.
1057(b)-(c), it is Opposer’s burden to demonstrate that it owns a trademark that was
used prior to Applicant’s first use or constructive use of its mark and not abandoned.
See Exec. Coach Builders, 123 USPQ2d at 1180; Life Zone Inc. v. Middleman Grp.
Inc., 87 USPQ2d 1953, 1959 (TTAB 2008).
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A. Opposer’s first use date.
Meghan French, the Chief Executive Officer of Opposer’s predecessor-in-interest
testified as follows:
● In October 2017, Opposer launched its initial WORLD-CHANGING WOMEN
website making “clear and conspicuous use” of the WORLD-CHANGING WOMEN
mark;31
● In November 2017, Opposer distributed its initial conference invitations to over
7,500 invitees as well as posting a link on its website outlining the speakers and
content for the “World-Changing Women” conference;32
● “On February 20-22, 2018, Conscious Company Media (a subsidiary of
[Opposer]) hosted the first ever World-changing Women’s Summit with over 170
attendees.”33
Kim Carpenter, Applicant’s owner, testified as follows:
On March 14, 2018, I became aware that my friend Jenny
Kassan was one of the speakers for Opposer’s WCW

31 French Decl. ¶7 (16 TTABVUE 5). Opposer attached “a sample screenshot of the website
… as Exhibit A.” Id. However, Exhibit A (16 TTABVUE 10-21) is a copy of Applicant’s website
(worldchangingwomen.com) that makes “clear and conspicuous use” of Applicant’s registered
mark WORLD CHANGING WOMEN and design (Registration No. 5701394). Opposer also
mistakenly identified the website in its brief. Opposer’s Brief (18 TTABVUE 3) (“The initial
‘World-Changing Women’ website was launched in October 2017 that included clear and
conspicuous use of ‘World-Changing Women brand (the ‘Mark’). (Plaintiff’s Exhibit 1-A)).
32 French Dec. ¶12 (16 TTABUE 6). Opposer attached as Exhibit C, a screenshot of its website
(consciouscompanymedia.com) advertising the January 29-31, 2020 World-Changing
Women’s Summit in Sonoma, California. (16 TTABVUE 25-51).
33 French Decl. ¶15 (16 TTABVUE 6). Opposer attached as Exhibit F, a photograph of a sign
placed at the event. (16 TTABVUE 57). Exhibit G is a schedule of “speakers and topics.”
(16 TTABVUE 59). Neither the sign (Exhibit F), nor the schedule of “speakers and topics”
(Exhibit G), include a date with a year. Moreover, the Exhibit G schedule of “speakers and
topics” does not identify any speakers, with the exception of a performance by Alsha
Fukushima.
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summit. I requested membership to the event facebook [sic]
group related to the World Changing Women Summit to
see what it was about. I was concerned they were using the
mark, but thought “it’s just one event.” I was not yet
educated about trademark law.34
Ms. Carpenter’s testimony corroborates that Opposer’s predecessor conducted a
WORLD CHANGING WOMEN’S Summit in February 2018.
We find that Opposer’s priority date is February 20, 2018, the date Conscious
Company Media, a subsidiary of Opposer, hosted the first WORLD CHANGING
WOMEN’S Summit.
B. Applicant’s first use date.
Applicant’s constructive date of first use is the May 16, 2018 filing date of the
application at issue. Because that date is subsequent to Opposer’s priority date, we
must determine Applicant’s actual date of first use.
Kim Carpenter testified, “In July 2017, client Nadine Nicholson attended a World
Changing Women Journey to Bali.”35 Nadine Nicholson corroborated Ms. Carpenter’s
testimony testifying,
3. From June 23[,] 2017 until July 13[,] 2017, I
attended a World Changing Women Journey to Bali,
Indonesia, given by Applicant/Defendant Kim Carpenter.
4. Applicant/Defendant organized travel to different
areas of Bali, led business masterminding sessions, and
offered activities intended to facilitate personal growth.36

34 Carpenter Decl. ¶22 (17 TTABVUE 7). See also French Decl. ¶16 (16 TTABVUE 7) (“On
March 14, 2018, I received a request from Defendant to be added as a member of Plaintiff’s
World-changing Women’s Summit Facebook group.”).
35 Carpenter Decl. ¶31 (17 TTABVUE 7).
36 Nicholson Decl. ¶¶3-4 (17 TTABVUE 67).
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We find that Applicant’s priority date is June 23, 2017, the first say of the World
Changing Women Journey to Bali.37
C. Analysis.
As noted above, Applicant first used its WORLD CHANGING WOMEN on June
23, 2017, when it hosted the “Word Changing Women Journey to Bali.” Opposer, on
the other hand, first used its WORLD-CHANGING WOMEN mark on February 28,
2018, when it hosted the first WORLD-CHANGING WOMEN’S Summit. Therefore,
Applicant has proven prior use of its WORLD CHANGING WOMEN mark.
Opposer argues that Applicant did not use its mark for educational services but
for “vague journeys.”
While Defendant presents a declaration that one person
attended an event where Defendant mentioned such
“journeys” and on[e] declares that they attended some
hypothetical nebulous vacation, it is clear that no such
offering was ever formalized, planned nor any offers for
sale made.38
___

37 Because there is no testimony or evidence that Applicant’s use of its mark was token use
merely to reserve a right in the mark, we find that Applicant’s performance of its services to
one client constitutes bona fide “use in commerce.” See Christian Faith Fellowship Church v.
Adidas AG, 841 F.3d 986, 12 USPQ2d 1640, 1645 (Fed. Cir. 2016) (sale of two hats found to
constitute “use in commerce” under the Trademark Act).
[W]hen “a general regulatory statute bears a substantial
relation to commerce, the de minimis character of individual
instances arising under that statute is of no consequence” and
Congress has the power to regulate it under the Commerce
Clause.
Christian Faith Fellowship Church, 120 USPQ2d at 1644 (quoting Gonzales v. Raich,
545 U.S. 1, 17 (2005) (quoting U.S. v. Lopez, 514 U.S. 549, 558 (1995))).
38 Opposer’s Brief (18 TTABVUE 5).
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As Defendant’s own evidence demonstrates, the only
services that were expressly marketed in connection with
the Mark were “journeys”.39
Opposer mischaracterizes Nadine Nicholson’s testimony. Ms. Nicholson testified
that on these “journeys,” Applicant “led business masterminding sessions, and offered
activities intended to facilitate personal growth.”40 Applicant advertised the “World
Changing Women’s Journey to Bali” through a promotional email.41 In addition, Tara
Butler Floch testified that at her online event, Applicant “promoted her WORLD
CHANGING WOMEN band and her ecotourism and service trips to Kenya and
Bali.”42
Opposer also contends that testimony regarding Applicant’s use of its mark is not
credible. According to Opposer, between the Carpenter and Nicholson testimony
“there is no evidence of a speaker list, no pricing, no promotional materials, signage
or any other indicia of an event, and no other evidence.”43
The fact is that this cursory declaration with zero
supporting evidence, promotional materials, sales receipts,
conference agenda and even the longevity (3 weeks?!) in an
area where the Defendant acknowledges that she lived for
years belies any presumption that this was indeed an event
that was organized, offered and sold in commerce in
connection with the Mark. And the reason is simple—no
such evidence exists.44

39 Opposer’s Brief (18 TTABVUE 6).
40 Nicholson Decl. ¶4 (17 TTABVUE 67).
41 Carpenter Decl. ¶16 and Exhibit H (17 TTABVUE 6 and 35).
42 Floch Decl. ¶4 and Exhibit A (17 TTABVUE 42 and 46).
43 Opposer’s Brief (18 TTABVUE 7).
44 Opposer’s Brief (18 TTABVUE 8).
Opposition No. 91245787

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While there is some merit in Opposer’s critique of Applicant’s slim documentary
evidence, Opposer did not avail itself of the opportunity to cross-examine the
witnesses and explore these purported deficiencies. Nor did Opposer use its rebuttal
to introduce testimony and other evidence regarding standard industry practices for
promoting these types of educational services to prove that Applicant had not made
bona fide use of its mark.
Finally, the Carpenter testimony and Nicholson testimony were clear, convincing
and uncontradicted. See Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127,
144 USPQ 430, 432 (CCPA 1965) (“Oral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use in a trademark proceeding .”); Nat’l
Bank Book Co. v. Leather Crafted Prods., Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a party's mark when it is based
on personal knowledge, it is clear and convincing, and it has not be contradicted);
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979)
(oral testimony may be sufficient to establish both prior use and continuous use when
the testimony is proffered by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently circumstantial to convince the Board
of its probative value); GAF Corp. v. Anatox Analytical Servs., Inc., 192 USPQ 576,
577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear,
consistent, convincing, and uncontradicted).
In view of the foregoing, we find that Applicant has established priority of use.
Inasmuch as Opposer did not establish a date of priority before Applicant’s, an
Opposition No. 91245787

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essential element of any claim under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), we need not reach the issue of likelihood of confusion because without proof
of priority, Opposer cannot prevail. See Exec. Coach Builders, 123 USPQ2d at 1199.
Decision: We dismiss the opposition.